Académique Documents
Professionnel Documents
Culture Documents
No. 18-1979
Appeal from the U.S. District Court for the Northern District of
California, No. 3:16-cv-02787-WHO, Judge William H. Orrick III
September 6, 2018
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FORM 9. Certificate of Interest Form 9
Rev. 10/17
UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
Huawei Technologies Co., Ltd. et al. Samsung Electronics Co., Ltd.
v.
18-1979
Case No.
CERTIFICATE OF INTEREST
Huawei Technologies Co., Ltd.; Huawei Device USA, Inc.; Huawei Technologies USA, Inc.
certifies the following (use “None” if applicable; use extra sheets if necessary):
Huawei Device USA, Inc. Huawei Device USA, Inc. Huawei Investment & Holding Co., Ltd.
Huawei Technologies USA, Inc. Huawei Technologies USA, Inc. Huawei Investment & Holding Co., Ltd.
4. The names of all law firms and the partners or associates that appeared for the party or amicus now
represented by me in the trial court or agency or are expected to appear in this court (and who have not
or will not enter an appearance in this case) are:
Sidley Austin LLP: Michael J. Bettinger; Cory D. Szczepanik; Curt Holbreich; Douglas I. Lewis; Ellen S. Robbins; Irene I.
Yang; John W. McBride; John P. Wisse; Kevin J. O'Brien; Leif E. Peterson, II; Nathan A. Greenblatt; Rachel R. Davidson
5. The title and number of any case known to counsel to be pending in this or any other court or agency
that will directly affect or be directly affected by this court’s decision in the pending appeal. See Fed. Cir.
R. 47. 4(a)(5) and 47.5(b). (The parties should attach continuation pages as necessary).
None.
Reset Fields
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TABLE OF CONTENTS
INTRODUCTION ...................................................................................... 1
ARGUMENT ........................................................................................... 10
II. The Anti-Suit Injunction Does Not Satisfy the Gallo Test. .......... 15
CONCLUSION ........................................................................................ 37
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TABLE OF AUTHORITIES
Page(s)
Cases
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Other Authorities
http://europa.eu/rapid/press-release_IP-14-490_en.htm
(visited Sept. 3, 2018) ......................................................................... 26
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INTRODUCTION
Samsung does not dispute that the Shenzhen Court has already
determined that Huawei complied with its FRAND obligations and that
principles,” Samsung argues that only a U.S. court can decide whether
a party has complied with its FRAND obligations. Samsung insists that
a U.S. court can block the consequences of the Shenzhen Court’s ruling
commitment for itself. As Samsung would have it, if Huawei had filed
suits on the same day in the United States, China, and a dozen other
courts of every other country had found that Samsung infringed SEPs,
had not complied with its FRAND obligations, and should be enjoined, a
trailing U.S. court could enjoin enforcement of all of those rulings. That
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Samsung only after finding that Samsung had engaged in such delay—
necessary to bring that party to the table. See id. The Shenzhen Court
district court’s logic, a flaw that Samsung ignored in its briefing below:
That fact confirms this case has nothing to do with “patent holdup” as
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Samsung claims, and that the district court clearly erred in issuing the
anti-suit injunction.
now argues, for the first time, that third parties (arbitrators or courts)
that the only license terms that can truly be FRAND are terms that it
fails both the Gallo and Winter tests and offends international comity.
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offers, which have declined from an initial offer at its publicly disclosed
and that “Huawei maintained that demanded rate [1.5%] throughout its
2014 has proposed per unit rates on LTE handsets, see Appx927-928,
that equate to much less than 1.5% of the price of an average Samsung
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free cross license (see Resp. 7) are clearly not FRAND. As for
Samsung’s single proposal under which it would pay Huawei (see Resp.
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arbitration of the parties’ FRAND dispute in May 2013 and has since
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Huawei informed Samsung by letter on May 25, 2016 that suits had
been filed that day in the United States and in China. Appx7465-7466.
omits the context of the statement, in which Mr. Ding explains that
holder is “faced with potential licensees who are negotiating in bad faith
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for its requests for injunctive relief, Huawei asked the Shenzhen Court
to resolve whether its licensing efforts with respect to its Chinese SEPs
Appx5599.
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Samsung claims that “the Shenzhen court did not give any indication it
considered the royalty rates in Huawei’s SEP license with Apple, nor
Appx4. The Shenzhen Court states that Huawei disclosed the existence
the Apple license, it failed to urge the Shenzhen Court to consider that
license.
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ARGUMENT
F.3d 872 (9th Cir. 2012) (“Microsoft II”) (see Resp. 21-24), disregards the
stark factual and legal differences between that case and this one. In
wholly inapt.
Motorola, and asked the court to set a FRAND royalty. Microsoft Corp.
obtain a FRAND license, Microsoft did not contest the essentiality or its
*61 (W.D. Wash. Apr. 25, 2013) (“Microsoft III”). In short, Microsoft did
Motorola on FRAND terms, and the U.S. district court confirmed its
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Motorola filed its German suit in an effort to derail the U.S. FRAND
case. See Microsoft II, 696 F.3d at 879, 886. Motorola pursued that
Microsoft Corp. v. Motorola, Inc., 795 F.3d 1024, 1053 (9th Cir. 2015)
(“Microsoft IV”) (“[T]he jury could infer that demanding a 2.25% royalty
rate was not a good-faith effort to realize the value of the technology”),
Xbox, or less than 0.02% per unit). Motorola’s suit thus served no
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and issued its injunction without ever evaluating whether Motorola had
(and applying both the Gallo and Winter tests), the district court
obligation.
notion that a neutral third party can ever determine FRAND terms.
(See Resp. 34-36, 50-52.) Further, unlike Microsoft, the party seeking
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the Microsoft court did. See Appx13-15 (“If I take Samsung’s reasoning
to its logical conclusion, I see no end to this case, and certainly no way
Motorola filed its German suit six months after Microsoft’s U.S.
complaint in an effort to derail the U.S. FRAND case. But Huawei filed
this suit and the Chinese suits, at the same time, because it did not
know what aspects of the larger dispute each court would be willing to
end run by Huawei around this action, for it was Huawei that filed this
derail its own lawsuit. Moreover, as Samsung concedes (Resp. 43), the
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been offered both a license on terms that have been found to be FRAND,
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terms.
II. The Anti-Suit Injunction Does Not Satisfy the Gallo Test.
“propriety of the precise relief sought in the Shenzhen actions” was for
integrity” of the case (Resp. 26) are circular and have no grounding in
the record, or in what would occur if the anti-suit injunction were not in
place.
and Samsung’s antitrust claim. There is no longer any claim for any
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obligation.
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outcome under which the court permits Samsung to continue its tactics
license. Even if such a strange result were possible (and Samsung does
in one which can be pled as res judicata in the other.’” (Resp. 27,
quoting Laker Airways Ltd. v. Sabena, Belgian World Airlines, 731 F.2d
confirms the district court’s error. (Br. 35.) Samsung’s only rejoinder is
that the Shenzhen Court’s decision (currently on appeal) is not yet final,
such that issue preclusion would not yet attach. (Resp. 27-29.)
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court, and would require judgment in Huawei’s favor on its own breach
of FRAND contract claim.3 The district court here would have nothing
left to decide. But Huawei is not taking the position that the district
Rather, the question is whether (as the district court claimed), the
Laker Airways establishes (in the passage Samsung cites and relies on,
Resp. 27) that both the U.S. and Chinese courts may proceed. Samsung
does not dispute that the Shenzhen Court had every right to adjudicate
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the patent infringement dispute placed before it, to analyze the parties’
F.2d at 927.
does not turn on the merits of the foreign suit under foreign law” (Resp.
42, quotation marks omitted) only confirms the district court’s error.
The district court announced that it would decide “the propriety of the
the district court would evaluate for itself whether the Shenzhen Court
December jury trial date Samsung identifies (Resp. 39) does not
determine when the district court will resolve any question of equitable
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Even if the jury were to find for Samsung on such claims,4 there is no
date certain upon which the district court will rule on Samsung’s claims
relief.” (Resp. 39.) This Court could hardly be expected to view that as
Samsung also argues that the anti-suit injunction did not “nullify”
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comity served no purpose. On the other hand, if the Chinese courts will
not enforce the injunctions sua sponte, the district court’s action
Samsung’s claims, see Resp. 17) that the enforcement of the FRAND
because the Shenzhen cases “are not ‘complete’” in that the Shenzhen
Court “did not fully resolve the parties’ FRAND dispute” because “the
royalty rates and license structure” were not determined. (Resp. 40-41.)
5In any event, Samsung’s assertion that comity concerns are not
implicated where the litigation involves a dispute between private
parties is misplaced—virtually all anti-suit injunction cases involve
such “private” actions, yet comity is always an important consideration.
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part of the Shenzhen proceeding, for neither party asked that court to
case could ever fully resolve the parties’ FRAND dispute, because
FRAND terms. (See Resp. 34-36.) The Shenzhen Court, with a panel of
three judges that held 24 days of hearings and produced a 200 page
because the Shenzhen Actions would “frustrate U.S. policies” (Resp. 25)
there is no “per se rule that injunctions are unavailable for SEPs,” and
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discussion of U.S. policy on this question saves for the end any mention
of this Court’s Apple holding. (See Resp. 30-33.) Samsung argues that
33.) But that is exactly the finding the Shenzhen Court made:
even suggest that they do. Instead, Samsung again invokes the spectre
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FRAND declarations.
Microsoft II. (See Resp. 33-34.) As explained above, that case provides
696 F.3d at 880. Here, if anything, Huawei has used the Shenzhen
parties’ dispute.
both waived (because Samsung never made this argument below) and
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without merit. First, Howsam v. Dean Witter Reynolds, Inc., 537 U.S.
been found to infringe and to have failed to comply with its FRAND
obligations in China.
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under its consent decree with the European Union, Samsung committed
are those that comply with the relevant standards. Indeed, the parties
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The first prong of Gallo addresses “whether or not the first action
quoting Gallo. As Huawei explained (Br. 37-38), the only aspect of this
Shenzhen Actions. While the Ninth Circuit has said that ordering of
earlier-filed foreign action is Gallo itself (see Resp. 37), where the
See E. & J. Gallo Winery v. Andina Licores S.A., 446 F.3d 984, 994 (9th
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China.
claim, that would not make its complaint “dispositive of” the Shenzhen
Instead, Samsung claims that the only question is “whether there are
enjoined.” Microsoft II, 696 F.3d at 882. Here, the U.S. action is not the
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Samsung fails to identify any lawful basis for the district court’s
refusal to follow the Supreme Court’s Winter test, which applies “[i]n
each case” requesting injunctive relief. Winter v. Nat. Res. Def. Council,
Winter factors, and that some Ninth Circuit decisions approving of anti-
suit injunctions do not analyze them either. (Resp. 46.) But other
the district court’s ruling here. Moreover, in Microsoft II, the Ninth
single sentence” (Resp. 47), but it is the Ninth Circuit’s only explicit
the extent those decisions could be read to conflict with Winter (see
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clear that both Samsung’s position and the district court’s analysis are
argue that its view of the Gallo test can be reconciled with Supreme
Circuit cases that Samsung says conflict with Winter. This Court
anti-suit injunction cases that would create such a conflict (the Ninth
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decision on the ground that the Ninth Circuit has been ignoring
that the district court was free to ignore Winter because Applied
that Winter is not “an intervening Supreme Court decision.” (Resp. 47.)
Where the Supreme Court has announced the law, that announcement
over-reads that silence as a “holding” that Winter does not apply. (Resp.
48-49.) Even if there were such a Ninth Circuit holding, this Court
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would have to “clos[e] its manufacturing plant and ceas[e] the sale of
district court failed to consider that this would never occur if Samsung
agreed to the FRAND terms the Shenzhen Court found that Huawei
terms that Huawei repeatedly offered over the past five years. See
supra at 4-6. Huawei emphasized this point to the district court. See
Samsung would never need to face the “harm” the court relied on.
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commitment.
determination and avoid any injunction. (Resp. 52.) With that error
because “Huawei has not sought a stay” of the antisuit injunction (Resp.
52) makes no sense. The district court’s (erroneous) view was that the
the case before it. Appx17. Just as a court that has enjoined the
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allow the demolition to proceed, so too here there is little question that
the district court would have denied a stay, because a stay would have
them “as-yet-unsuccessful requests,” Resp. 53), and does not deny that
it has also pursued injunctions on SEPs against others in the past (see
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assertion that the “public interest lies in this court adjudicating the
district court was “protecting the exercise of its own jurisdiction” (Resp.
54) ignores that the Shenzhen Court had every right to review the
injunctive relief” on SEPs (Resp. 54) again fails to address the firm
there is no such rule. (See Br. 57-58.) Samsung then argues (again)
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54.) The public interest lies in supporting the ability of courts and
CONCLUSION
For the foregoing reasons, the Court should reverse the district
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CERTIFICATE OF COMPLIANCE
CERTIFICATE OF SERVICE